DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because “comprises” is legalese. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The use of the terms VECTOR 4411, KRATON D1162, TAIPOL 4202, SX105, SASOLWAX H1, LP1060P, NYFLEX 223, NYFLEX 222B, PAROL, KAYDOL, SONNEBORN, OLYMPUS L500, PRIMOL 352, PRIMOL 382, CALSOL 5550, KARAMAY N4010, SYLVAGUM TR, SYLVARES TR, ARKON, HIKOTACK, DERTOPHENE 1510, DERTOPHENE H150, SYLVAREZ TP95, FORAL DX, FORAL AX-E, SYLVALITE RE 100, ESCOREZ 5400, SUKOREZ SU210, QUINTONE DX390N, SUKOREZ SU400, KRISTALEX, PLASTOLYN, IRGANOX 1010, IRGAFOS 168, CHINOX 1010, EVERNOX 1010, EVERFOS 168, SONGNOX 10, SONGNOX 1680, SUKOREZ SU 525, SUKOREZ SU 420, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 32 is objected to because of the following informalities: “other hydrocarbon comonomer” is a typographical error and should read “other hydrocarbon comonomer(s)”, “another hydrocarbon comonomer”, or similar, depending upon applicant’s meaning. Appropriate correction is required.
Claim 38 is objected to because of the following informalities: “gun rosin” is a typographical error and should read “gum rosin”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 20, the phrase “optionally” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Dependent claims 21-39 are similarly rejected by their dependence on indefinite claim 20.
Regarding claims 20 and 29, the measurement procedure for determination of the “congealing point” is not defined by the claims. Dependent claims 21-39 are similarly rejected by their dependence on indefinite claim 20.
Regarding claims 20 and 30, the measurement procedure for determination of the “needle penetration” is not defined by the claims. Dependent claims 21-39 are similarly rejected by their dependence on indefinite claim 20.
Regarding claims 20, 34, and 35, the measurement procedure for determination of the “viscosity” is not defined by the claims. Dependent claims 21-39 are similarly rejected by their dependence on indefinite claim 20.
The term “about” in claim 31 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “consisting primarily of” in claim 32 is a relative term which renders the claim indefinite. The term “primarily” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 38 and 39 are similarly rejected by their dependence on indefinite claim 32.
The term “pure” in claim 33 is a relative term which renders the claim indefinite. The term “pure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20-24, 26-35, and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al (US 20220325149 A1, priority date 7/5/2019).
Regarding claims 20, 21, and 22, Ye et al discloses a low tack hot melt pressure sensitive adhesive composition, comprising:
10-40 wt% [0014] of at least one styrene block copolymer, in particular a linear triblock copolymer in combination with a linear diblock copolymer [0042], with a diblock content preferably ranging from 1 to 70 wt% [0052], and with specific examples disclosed of useful styrene block copolymers with styrene contents ranging from 15 to 44 wt% [0056], and
4 to 15 wt% of at least one wax with a congealing point higher than or equal to 55°C [0011-0012].
The disclosed combination of a linear triblock styrene copolymer with a linear diblock styrene copolymer reads on applicant’s claimed SBC A with components A1 and A2. With respect to the claim limitations of weight percentages of the wax and styrene block copolymer SBC A, the diblock content of the styrene block copolymer, the styrene content of the styrene block copolymer, and the congealing point of the wax, a prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Ye does not particularly disclose the needle penetration of the wax at 25°C, the viscosity of the hot melt adhesive composition at 120°C, or the viscosity of the hot melt adhesive composition at 177°C. However, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 23 and 24, Ye discloses all limitations of claim 20 as set forth above and further discloses that the linear triblock copolymer in combination with the linear diblock copolymer may be a styrene-butadiene-styrene triblock copolymer (SBS) optionally in combination with a styrene-butadiene diblock copolymer, a styrene-isoprene-styrene triblock copolymer (SIS) optionally in combination with a styrene-isoprene diblock copolymer, a styrene-ethylene-butylene-styrene copolymer (SEBS), a styrene-butadiene-butylene-styrene copolymer (SBBS), a styrene-ethylene-propylene-styrene copolymer (SEPS) or any mixture thereof [0013].
Regarding claim 26, Ye discloses specific examples of useful styrene block copolymers with styrene contents ranging from 15 to 44 wt% [0056]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 27, 28, and 29, Ye discloses 4 to 15 wt% of at least one wax with a congealing point higher than or equal to 55°C [0011-0012] chosen from the group consisting of paraffin waxes, Fischer-Tropsch waxes, ethylene-vinyl acetate waxes and their combinations [0028], which are species of the genus of synthetic waxes. "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). See MPEP 2131.02.
Regarding claim 30, Ye does not particularly disclose the needle penetration of the wax. However, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 31, Ye further discloses that the hot melt adhesive composition further comprises 5 to 30 wt% [0018] of at least one mineral oil (plasticizer), which is a naphthenic oil and/or a paraffinic oil [0017]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claim 32, Ye further discloses that the hot melt adhesive composition further comprises 30-70 wt% [0016] of at least one tackifying resin chosen from the group consisting of natural and modified rosins, glycerol and pentaerythritol esters of natural and modified rosins, polyterpene resins, phenolic-modified terpene resins, aliphatic petroleum hydrocarbon resins having a Ring and Ball softening point of from about 60°C to 140°C and resulting from the polymerization of C5-hydrocarbon monomers, their hydrogenated derivatives, aromatic petroleum hydrocarbons resins having a Ring and Ball softening point of from about 60°C. to 140°C and resulting from the polymerization of C9-hydrocarbon monomers, their hydrogenated derivatives, aliphatic and/or aromatic petroleum resins (C5/C9) having a Ring and Ball softening point of from about 60°C to 140°C and resulting from the polymerization of C5/C9-hydrocarbon monomers, their hydrogenated derivatives and any mixture thereof [0015].
Regarding claim 33, Ye discloses that the endblock reinforcing resins in their hot melt adhesive composition may be an aromatic resin based on pure or mixed monomer streams or aromatic monomers [0143].
Regarding claims 34 and 35, Ye does not particularly disclose the viscosity of the hot melt adhesive composition at 120°C or 177°C. However, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 37, Ye discloses articles comprising the hot melt adhesive composition, including a disposable diaper, disposable training pants, a disposable adult incontinent pad or brief, a disposable feminine sanitary napkin or pad [0022].
Regarding claim 38, Ye discloses all limitations of claim 32 and further discloses that the natural and modified resins used as a tackifying resin include gum rosins, wood rosins, tall-oil rosins, distilled rosins, hydrogenated rosins, dimerized rosins, and polymerized rosins [0065].
Regarding claim 39, Ye discloses all limitations of claim 32 and further discloses that the glycerol and pentaerythritol esters of natural and modified resins used as a tackifying resin include the glycerol esters of pale wood rosin, the glycerol esters of hydrogenated rosin, the glycerol esters of polymerized rosin, the pentaerythritol esters of pale wood rosin, the pentaerythritol esters of hydrogenated rosin, the pentaerythritol esters of tall oil rosin, and the phenolic modified pentaerythritol esters of rosin [0066].
Claims 25 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al (US 20220325149 A1, priority date 7/5/2019) as applied to claim 20 above, further in view of Hu et al (US 20130202787 A1, priority date 2/18/2011). The above discussion with respect to Ye et al is incorporated herein by reference in its entirety.
Regarding claim 25, Ye discloses all limitations of claim 20 but does not particularly disclose the melt flow index of the styrene block copolymer.
In the same field of endeavor, Hu et al discloses a low temperature hot melt adhesive for disposable articles, such as disposable diapers (Abstract), comprising: 5-20 wt% of at least one styrene block copolymer with a styrene content greater than 40% [0006-0007], optionally, a combination of two or more styrene block copolymers which may be styrene-butadiene, styrene-isoprene, among other triblock copolymers [0018], 30-70 wt% of a tackifier (tackifying resin) [0007], 0.5-5 wt% of a wax [0007], optionally, up to 30 wt% of an oil (plasticizer) [0007], and 0.1-2.0 wt% of additives, such as an antioxidant [0007].
Hu particularly discloses that the at least one styrene block copolymer has a melt flow index greater than 33 (g/10 min) as measured by ASTM D1238 [0006]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Hu particularly notes that a melt flow index greater than 33 enables a desirable viscosity [0018].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a hot melt adhesive composition according to Ye having a melt flow index, as Hu demonstrates this melt flow index as being suitable for similar hot melt adhesive compositions for enabling a desirable viscosity. This represents the use of a suitable range of melt flow indices in a hot melt adhesive composition application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
In the alternative, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 36, Ye discloses all limitations of claim 20 but does not particularly disclose a core stabilization adhesive comprising the disclosed hot melt adhesive composition.
In the same field of endeavor, Hu discloses their adhesives are useful as core adhesives, particularly suitable for use in the manufacture of disposable absorbent articles such as diapers, adult incontinent products, bed pads; sanitary napkins, and in other absorbent products, such as, bibs, wound dressings, and surgical capes or drapes [0032].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the hot melt adhesive composition disclosed by Ye as a core stabilization adhesive, as disclosed by Hu, because the two compositions are equivalents known to be useful for the same purpose of disposable absorbent articles.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kauffman et al (US 20200377716 A1, priority date 5/31/2019) discloses hot melt compositions including a styrene block copolymer and wax, comprising: 15-60 wt% of a styrene block copolymer [0005], 15-75 wt% of a wax having a congealing point from 45-90°C [0005], which may be a paraffin, microcrystalline, Fischer-Tropsch, animal, or vegetable wax, or combinations and functionalized waxes thereof [0061], 10 wt% or greater of a liquid plasticizer [0005], and 5-40 wt% of a tackifying agent (tackifying resin) [0009]. The styrene block copolymer may be triblock, such as SIS, SBS, SBBS, SEBS, SEPS, and combinations thereof, among others [0042]. The styrene block copolymer can have a styrene content between 10 and 50 wt% [0043]. The viscosity of the hot melt adhesive composition at 190°C is no greater than 10,000 cP (mPa.s), which is presumed to read on claim 35 [0053]. Suitable classes of tackifying agents include aromatic, aliphatic and cycloaliphatic hydrocarbon resins, mixed aromatic and aliphatic modified hydrocarbon resins, aromatic modified aliphatic hydrocarbon resins, and hydrogenated versions thereof; terpenes, modified terpenes and hydrogenated versions thereof; natural rosins, modified rosins, rosin esters, and hydrogenated versions thereof; low molecular weight polylactic acid; and combinations thereof. Examples of useful natural and modified rosins include gum rosin, wood rosin, tall oil rosin, distilled rosin, hydrogenated rosin, dimerized rosin and polymerized rosin. Examples of useful rosin esters include e.g., glycerol esters of pale wood rosin, glycerol esters of hydrogenated rosin, glycerol esters of polymerized rosin, pentaerythritol esters of natural and modified rosins including pentaerythritol esters of pale wood rosin, pentaerythritol esters of hydrogenated rosin, pentaerythritol esters of tall oil rosin, and phenolic-modified pentaerythritol esters of rosin [0075]. The disclosed hot melt adhesives are particularly useful for core stabilization [0017] and can be incorporated in disposable absorbent articles [0083].
Moriguchi et al (US 20180016478 A1, priority date 2/20/2015) discloses a hot melt adhesive composition and disposable product, comprising: 100 parts by weight (20.2 to 28.5 wt%) of a thermoplastic block copolymer comprising a styrene block copolymer with a styrene content of 10-50 wt% which may be a styrene-isoprene or styrene-butadiene di-block copolymer [0022-0024] or a tri-block styrene copolymer, such as SIS, SBS, SEPS, or SEBS [0040], which may be used alone or in combination [0041], 1 to 15 parts by weight (0.2 to 4.1 wt%) of an amorphous wax [0095], 200 to 300 parts by weight (50.6 to 66.5 wt%) of a tackifier resin [0097], and 50 to 80 parts by weight (10.8 to 21 wt%) of a plasticizer [0098]. The hot melt adhesive has a viscosity not more than 5,000 mPa.s at 150°C [0029]. The block copolymer preferably has a diblock content of 80% by weight or less [0045].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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